The Bombay High Court has invalidated a trademark registration obtained through fraudulent user claims, affirming that bad faith registration is voidable under the Trade Marks Act, 1999, where a prior user has established continuous and documented use of the mark. This judgment reinforces the primacy of actual use over registered status and sets a clear precedent against opportunistic trademark filings.
Background & Facts
The Dispute
The petitioner, Meera Jadhav, filed a commercial miscellaneous petition under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the registration of the mark "TRACT ORJUNCTION" (later corrected to "TRACTORJUNCTION") in Class 35, held by Respondent No. 1, Shivankar Gupta. The Registrar of Trade Marks, Respondent No. 2, issued the impugned registration. Respondents did not appear or file any response despite being served, leaving the petitioner’s averments uncontroverted.
Key Facts
- The petitioner adopted and began using the mark "TRACTORJUNCTION" in 2014, with continuous commercial use since at least 2016 in relation to services under Class 35, including tractor sales, servicing, and related online platforms.
- The petitioner filed multiple trademark applications for the same mark across classes:
- Application No. 4473747 (Class 9): Filed 16.03.2020, Registered
- Application No. 4473749 (Class 12): Filed 16.03.2020, Accepted and Advertised
- Application No. 4473750 (Class 42): Filed 16.03.2020, Registered
- Application No. 4355544 (Class 35): Filed 22.11.2019, Objected
- Documentary evidence of prior use includes:
- Facebook page (@pg. 68-70) active since 2016
- Email correspondence with website designer (January-March 2016) for www.tractorjunction.com
- Invoices, quotations, and purchase orders (2016-2017)
- Customer agreements (2016-2017)
- Sales promotion expense invoices (2016)
- AI TV interview dated 11.04.2017
- Web analytics showing high traffic (2016-2020)
- YouTube channel content showing mark usage since early 2016
- PAN card and partnership deed dated 25.05.2016
- DPIIT registration certificate dated 08.07.2017
- Whois record and archived website screenshots from April 2016
- Respondent No. 1 filed trademark application on 10.10.2018, claiming first use of the mark as 10.09.2018 in Form TM-A.
- In a prior reply to rectification proceedings before IPAB, Respondent No. 1 admitted that the claimed use date of 05.10.2018 was an error by their attorney, Vakilsearch, and claimed instead that the mark had been used since 2011 by "Shreeji Motors", a Mahindra & Mahindra tractor agency in Gwalior and Gohad.
- No documentary evidence was filed to substantiate use by Shreeji Motors or any assignment of rights from Shreeji Motors to Respondent No. 1.
- An investigation report dated 02.03.2021 by Mr. Sameer Fakki confirmed Respondent No. 1 had never used the mark.
- On 30.03.2022, the petitioner assigned all rights in the mark and pending applications to Petitioner No. 2.
Procedural History
- 10.10.2018: Respondent No. 1 filed trademark application (Class 35) claiming first use as 10.09.2018
- 2019-2021: Petitioner filed objections and initiated rectification proceedings before IPAB
- 02.03.2021: Investigation report submitted to IPAB confirming no use by Respondent No. 1
- 2021: Respondent No. 1 filed reply before IPAB admitting erroneous user date but claiming prior use since 2011 via Shreeji Motors
- 22.03.2022: Petitioner filed present petition under Section 57 before Bombay High Court
- 03.03.2025: Court noted non-appearance of Respondents
- 10.03.2026: Judgment reserved
- 23.03.2026: Judgment pronounced
Relief Sought
The petitioner sought cancellation of the impugned trademark registration under Section 57 of the Trade Marks Act, 1999, on grounds of bad faith and prior user rights.
The Legal Issue
The central question was whether a trademark registration obtained by falsely claiming first use, while ignoring established prior use by another party, constitutes bad faith under Section 11(10) and Section 18 of the Trade Marks Act, 1999, and whether such registration is liable to be cancelled under Section 57.
Arguments Presented
For the Petitioner
Mr. Yakshay Chheda, counsel for the petitioner, argued that the impugned mark was adopted and used continuously since 2014, with documented evidence of commercial use since 2016. He contended that Respondent No. 1’s claim of first use on 10.09.2018 was false, as confirmed by the investigation report and Respondent’s own admission before IPAB that the date was erroneously filed. He further argued that the claim of use since 2011 via Shreeji Motors was unsupported by any assignment or chain of title, rendering it legally irrelevant. He relied on S. Syed Mohideen v. P. Sulochana Bai to assert that prior user rights prevail over subsequent registration, and on Marie Stopes International v. Parivar Seva Sanstha and BPI Sports LLC v. Saurabh Gulati to establish that filing a false affidavit of use constitutes bad faith under Section 11(10).
For the Respondent
The Respondents did not appear or file any written or oral submissions. Their silence was treated as non-objection to the petitioner’s allegations.
The Court's Analysis
The Court found that the petitioner had established uncontroverted prior use of the mark "TRACTORJUNCTION" in Class 35 since at least 2016, supported by a comprehensive array of contemporaneous documents including invoices, website archives, email records, and third-party analytics. The respondent’s claim of first use on 10.09.2018 was directly contradicted by its own admission before IPAB that the date was an error, and further undermined by the absence of any evidence supporting use since 2011 by Shreeji Motors.
"The user claim since 2011 is premised on the fact that such usage was by one Shreeji Motors... However, there is nothing to support this claim, and even assuming such claim was true, there is nothing to support or show how Respondent No. 1 would be entitled to the benefit of such user claim since Respondent No. 1 has not produced any assignment from Shreeji Motors."
The Court emphasized that the respondent’s conduct - filing a false affidavit of use, then attempting to retroactively justify it with unsubstantiated claims - amounted to deliberate deception of the Trade Marks Registry. This conduct squarely fell within the ambit of Section 11(10), which prohibits registration where bad faith is involved, and Section 18, which renders registration void if obtained by fraud. The Court held that the petitioner’s prior use rights, recognized under both statutory and common law, were not extinguished by the respondent’s fraudulent registration. The silence of the respondent, despite being served, was treated as an admission of the petitioner’s allegations. The Court found the precedents cited by the petitioner directly applicable, particularly where courts have cancelled registrations obtained through misrepresentation.
The Verdict
The petition was allowed. The Court cancelled the registration of the mark "TRACT ORJUNCTION" in Class 35, held by Respondent No. 1, and directed the Registrar of Trade Marks to remove the mark from the register. The Court further directed that the petitioner’s pending application No. 4355544 (Class 35) be processed without prejudice, and costs of Rs. 50,000 were awarded to the petitioner. The Registrar was directed to comply within four weeks.
What This Means For Similar Cases
Prior Use Must Be Documented, Not Asserted
- Practitioners must maintain contemporaneous, verifiable records of trademark use - including invoices, website archives, emails, and third-party analytics - to establish prior rights.
- Oral testimony or unsubstantiated claims of use, even if made in court filings, will not suffice without documentary corroboration.
Bad Faith Registration Is a Ground for Immediate Cancellation
- Filing a false affidavit of first use, even if later "corrected", constitutes fraud under Section 11(10) and renders registration voidable.
- Courts will not tolerate attempts to retroactively justify fraudulent claims, especially where prior users have established legitimate rights.
Assignment of Rights Is Critical for Successor Claims
- A party claiming rights through a third party (e.g., a prior agency) must produce a valid assignment or chain of title.
- Absent such documentation, even genuine prior use by another entity cannot be transferred to the applicant.
